Briefing has begun in earnest. Microsoft recently filed its opening brief on the merits (File Attachment: microsoftopen.pdf (250 KB)) and now twenty-five self-proclaimed friends-of-the-court have added their respective two-cents. The case focuses on the burden of proof required to invalidate an issued patent. Microsoft has challenged the Federal Circuit’s rule that clear-and-convincing evidence is necessary. Instead, the software giant argues that a preponderance of the evidence should be sufficient to invalidate a patent — especially when a court is considering evidence of invalidity that was not considered by the Patent Office during examination.

In many ways, this case would only shift marginal cases — such as when an accused infringer is able to prove that a patent is probably invalid, but cannot provide clear and convincing evidence of that fact. The specific marginal problem for Microsoft is that it presented only limited evidence of the existence of custom built prior-art software that would invalidate i4i’s patent. Unfortunately for Microsoft, that twenty-year-old software code is no longer available and the parties presented competing factual testimony as to the operation of the prior art software.

Of the twenty-five friend-of-the-court (FOTC) briefs filed thus far, twenty explicitly and officially support Microsoft’s position that the standard should be lowered. Five briefs claim to support “neither party.” (Briefs supporting i4i will be filed in March, 2011). The official claim of support often has limited meaning. I would roughly divide the briefs into four groups: (1) Seven briefs support Microsoft’s position that the clear-and-convincing standard should not apply when the evidence of invalidity was not considered by the USPTO. (2) thirteen briefs further argue that the standard should be lowered-across-the-board in [essentially] all cases. (3) Two briefs take the opposite position — that the standard should remain clear and convincing. Although these two briefs officially support neither party, I expect many similar briefs to be filed in support of i4i next month. (4) Three briefs focus on interesting issues of whether we should have dual (or variable) standards that depend upon whether the PTO considered the evidence during prosecution. The following is a discussion of some of the more interesting aspects of the briefs that I noticed.

Lowering the Standard when the PTO has not Considered the Arguably Invalidating Evidence:

The well respected Supreme Court patent team at Fried Frank of Jim Dabney, Professor John Duffy, and Steve Rabinowitz filed a brief on behalf several corporations, including SAP, Symantec, Facebook, and Yahoo!. Their brief agrees with Microsoft that the standard for invalidating a patent should be lowered unless the file wrapper “shows that the PTO has engaged in reasoned decisionmaking with regard to a factual issue.” The brief grounds its argument in the Administrative Procedures Act (APA). As suggested above, the brief indicates that the APA “reasoned decisionmaking” analysis should occur on a fact-by-fact basis — with deference only given when evidence shows that the PTO made a reasoned decision regarding the fact in question. File Attachment: sap.pdf (170 KB). Writing for a group of 37 Professors, Professor Mark Lemley adds that APA deference may be appropriate only in very limited circumstances — such as when a particular factual question was decided in the course of an adversarial inter partes reexamination proceeding. File Attachment: lemley.pdf (229 KB). In a complementary brief, WM Mitchell Law School’s IP Institute (led by Profs Moy and Erstling) reviews 150 years of Supreme Court case to reach its conclusion that the clear-and-convincing evidence rule “was extended to issues not before the USPTO only recently.” File Attachment: wmmitchell.pdf (178 KB). See also File Attachment: bsa.pdf (196 KB).

Generic pharmaceutical companies generally support Microsoft’s position that “bad” patents should be easier to invalidate. Shashank Upadhye (Apotex’s IP chief) generally presents interesting arguments. The gist of his brief is that courts would do better to err on the side of free competition (i.e., invalidity). File Attachment: apotex.pdf (181 KB). Teva argues that C&C standard encourages applicant to conceal prior art. The logic behind that argument is that applicants would prefer to sneak through the PTO and then rely on the C&C standard in litigation to win the case or force settlement. File Attachment: tevapharma.pdf (234 KB). The Bar Association of DC argues the other-side — that increasing the incentive to submit prior art references during prosecution will not lead to better patent quality. File Attachment: badc.pdf (104 KB).

Apple and Intel support Microsoft’s position. However, it is clear that the companies (likely Apple) strained to avoid saying that they support “Microsoft” or even the “petitioner.” Overall, I would say that the brief does more harm to its cause than good. The problem is that the brief offers no additional arguments except for a three page section regarding “practical” and “empirical” evidence that the C&C standard makes a difference to juries. Unfortunately for Apple, the evidence presented is glaringly weak. File Attachment: apple.pdf (109 KB). However, evidence from other briefs, such as that filed by Prof Hollaar may provide a cumulative bulk sufficient to make this case. File Attachment: hollaar.pdf (262 KB).

EFF and PubPat: As might be expected, the Electronic Frontier Foundation (EFF) and the Public Patent Foundation (PubPat) both argued that a preponderance of the evidence should be sufficient to invalidate a patent in all cases. EFF’s brief (penned primarily by Michael Barclay) focuses primarily on policy — arguing that the sheer number of issued-but-invalid patents makes this an important issue that needs resolution. File Attachment: eff.pdf (293 KB). Dan Ravicher at PubPat similarly writes that the “extremely poor quality” of US patents screams for a lowering of the standard. File Attachment: pubpat.pdf (92 KB). See also, File Attachment: ctia.pdf (200 KB), File Attachment: hercules.pdf (207 KB). The brief by Google, et al., takes this a step further than the normal “lack of time” and “incompetence” statements – arguing that the current law and practice “tilt the scales heavily in favor of granting patent applications based on incomplete analyses.” File Attachment: google.pdf (241 KB).

Cisco, Ebay, Netflix, Toyota, and others argue that the advent of third-party requested reexaminations changes the system in a way that impacts the proper standard used in district court litigation. The brief argues (in a way that I don’t yet fully understand) that the existence of reexaminations suggests that the litigation standard should be a preponderance of the evidence. File Attachment: cisco.pdf (187 KB).

Supporting a High Standard: As the largest US patent holder, it might be no surprise that IBM supports a high standard for invalidating a patent. Of course, across the “v” sits Microsoft as another very large patent holder. I would point to three primary differences between IBM and Microsoft: (1) IBM has a long and extensive pro-patent stance; (2) IBM has an extremely strong and lucrative patent monetization program; and (3) perhaps most importantly, IBM itself has only rarely been sued for patent infringement. File Attachment: IBM.pdf (274 KB). The AIPLA – the largest association of US patent lawyers – also supports the status quo. File Attachment: aipla.pdf (157 KB).

Professor Morris does not take a position regarding a high or low standard. Rather, her focus is on whether it makes sense to have two standards of proof that vary according to whether the particular fact in question was considered by the USPTO. File Attachment: Morris.pdf (494 KB).

Actually, IANAE, I have found this discussion quite informative. I hope you have too.

I agree with your post above.

One final question: if the Feds decisions rests upon whether the undisputed evidence is sufficient to carry the C & C burden as opposed to when the evidence is insufficient, how would you IANAE, writing the opinion of the court, state the holding of the court?

They decided that the evidence wasn’t clear and convincing “as a matter of law”. That means they weren’t deciding how convinced they personally were (which would be a matter of fact, and therefore not their job), but rather whether the evidence was so insufficient that no reasonable jury could find it clear and convincing. Or possibly that the evidence didn’t actually show the fact that they insisted it showed, which would mean that the “dispute” was supported by no evidence at all.

It’s essentially a finding that there isn’t a genuine dispute of material fact at all, because the dispute of fact wouldn’t change the outcome of the case no matter how a jury could possibly decide it.

It’s also an interesting counterpoint to your insistence that patent art is inherently clear and convincing.

But, even if there is not, the Supremes still require a second filter to prevail if the burden is C & C, and that requires the court to assess whether the evidence meets the burden.

No, there is no second filter. The court might be asked whether the evidence could possibly meet the burden, when considering whether a reasonable jury should be allowed to hear the case or whether the jury’s decision should stand. But in this case, the question of whether the evidence actually meets the C&C burden has already been answered by the jury and is no longer up for debate.

You will have to admit here that you have never seen the Federal Circuit ever mentioning this second prong in any case

That’s because they know it doesn’t apply. There is no trier of fact on SJ. It is purely a question of “here are the facts, what law applies?”

In the end, I think that if the disctrict court or the judge have any substantail doubt that the evidence establishes the legal proposition, they must send the case to the jury.

They will, of course, because the “substantial doubt” is represented at this stage by interpreting all the disputed facts in favor of the non-moving party. If the moving party needs evidence of fact to make its case, that’s where the jury comes in.

Further, if the evidence is insufficient as a matter of law as in the i4i case,

It’s not insufficient as a matter of law in this case. It’s insufficient as a matter of fact. Which is to say, they put the evidence to the jury, and the jury was not persuaded. There was sufficient evidence to put to the jury in the first place, which is why it was.

IANAE, please. One of the duties of the court on SJ is to determine whether there is a genuine dispute of material fact. But, even if there is not, the Supremes still require a second filter to prevail if the burden is C & C, and that requires the court to assess whether the evidence meets the burden. You will have to admit here that you have never seen the Federal Circuit ever mentioning this second prong in any case — even if we may have some disagreement as to whether C & C means that the trier of fact must be convinced of the legal issue or whether instead the evidence only has to be clear.

In the end, I think that if the disctrict court or the judge have any substantail doubt that the evidence establishes the legal proposition, they must send the case to the jury. Further, if the evidence is insufficient as a matter of law as in the i4i case, the court should simply grant the PO summary judgment or a directed verdict.

The question here is whether a jury could reasonably find either that the plaintiff proved his case by the quality and quantity of evidence required by the governing law or that he did not.

That’s not the same question as “is the judge, on summary judgment, clear-and-convinced of the party’s case?” It’s a question of whether there is a dispute of material fact at all. If a party’s best evidence won’t make a clear and convincing case, that means the parties don’t have a dispute of fact that would make a difference in the result.

It’s essentially a rule that prevents a party from avoiding SJ by merely saying “no it isn’t” with no evidence to create a dispute of fact.

I submit to you that obviousness is hardly ever established to that degree of certainty as a matter of law,

It is on summary judgment, because the parties aren’t allowed to disagree on anything and the judge decides the law. There is no evidence, only facts.

IANAE, despite your resistance; some Amici, as have I, concluded that whether the evidence is sufficient under C & C is a required consideration according to Supreme Court case law. See, Roberta Morris’ brief at 34-5 where she cited Anderson v. Liberty Lobby,
Inc., 477 U.S. 242, 254-5 (1986), which was the HOLDING of the case.

Thus, in ruling on a motion for summary judgment, the judge must view the evidence presented through the prism of the substantive evidentiary burden. This conclusion is mandated by the nature of this determination. The question here is whether a jury could reasonably find either that the plaintiff proved his case by the quality and quantity of evidence required by the governing law or that he did not. Whether a jury could reasonably find for either party, however, cannot be defined except by the criteria governing what evidence would enable the jury to find for either the plaintiff or the defendant: it makes no sense to say that a jury could reasonably find for either party without some benchmark as to what standards govern its deliberations and within what boundaries its ultimate decision must fall, and these standards and boundaries are in fact provided by the applicable evidentiary standards.
Our holding that the clear-and-convincing standard of proof should be taken into account in ruling on summary judgment motions does not denigrate the role of the jury. It by no means authorizes trial on affidavits. Credibility determinations, the weighing of the evidence, and the drawing of legitimate inferences from the facts are jury functions, not those of a judge, whether he is ruling on a motion for summary judgment or for a directed verdict. The evidence of the nonmovant is to be believed, and all justifiable inferences are to be drawn in his favor. Adickes, 398 U.S. at 398 U. S. 158-159. Neither do we suggest that the trial courts should act other than with caution in granting summary judgment, or that the trial court may not deny summary judgment in a case where there is reason to believe that the better course would be to proceed to a full trial. Kennedy v. Silas Mason Co., 334 U. S. 249 (1948).”

Id. at 254-5.

Therefore, I again repeat, there is something missing in the Federal Circuit’s listing of the applicable law on SJ. It is missing the quantum of proof necessary and not simply whether the facts are in dispute or not. The adduced facts, giving all favorable inferences to the Patent Owner, must establish the legal proposition that the claim is either anticipated or obvious by the C & C standard. This requires I believe, that there be no substantial doubt as to whether the proposition is established.

I submit to you that obviousness is hardly ever established to that degree of certainty as a matter of law, which means the Federal Circuit is way off the beaten path, assuming the C & C standard is maintained by the Supreme Court in the present case.

That statement is crying out for context, as it was in the Supreme Court case you cited on this point.

Without referring back to their pleadings, I assume that i4i’s position is (similarly to that Supreme Court case) that they already have a trial decision in hand regarding whether the facts are clear-and-convincing as to invalidity. Therefore, if the clear-and-convincing standard is maintained as a matter of law, they win.

The convincingness of the actual evidence is completely beside the point in this case, assuming the standard remains unchanged, because a jury has already decided that point. The only question is whether the appropriate legal standard was applied (in which case the trial decision stands), or whether the wrong standard was applied (in which case you need to ask a new jury if Microsoft’s evidence is convincing enough).

If the court does not have to consider the C & C standard, the court could hold the claim invalid based on the evidence.

The Supremes do not sully their elevated minds with such common matters as findings of fact. If the C&C standard does not apply, you need all new findings of fact, from a trier of fact, on the question of invalidity. The Supreme Court is not a trier of fact. The best they can do is say that the record does not show whether the claim is invalid on a balance of probabilities standard.

Don’t get me wrong, I’m sure Microsoft would love for the Supremes to declare the patent invalid as a matter of law. But unless the jury held the patent invalid based on the right standard (or one less favorable to Microsoft), that would be quite an irregular thing for them to do.

But, since the courts decide cases all the time based on patents without ever mentioning the C and C standard, I submit to you that patents inherently meet the C & C standard allowing the court to ignore the issue on SJ.

All evidence meets the C&C standard on SJ. All of it. The facts on SJ are all known to 100% certainty, by the very nature of the procedure. It doesn’t even make sense to talk about standards of proof. It’s not anything special about patents, it’s just that patents are the most common form of prior art that comes up in invalidity proceedings, and contradictory evidence like what was shown at a trade show 10 years ago is a matter for a jury no matter the applicable standard. The only difference with patents is that the parties can’t disagree on what they actually say.

In this particular case, there was a disputed fact, and clearly the decision hinged on whether a jury would be convinced of that fact. Therefore, this was never an appropriate case for summary judgment, and the only possible result is the one we have now – a trial, a decision based on a particular standard of proof, and an appeal to ask whether that standard of proof was the correct one.

Now with your last two statements we clearly do not meet the SJ situation and the two “that’s cool” statements are contradicted by the last two “that’s uncool” statements.

Simply put Ned – ya cannot have the situation as you describe. Observe especially the last two create a question of material fact. All of the previous discussions provided that there were no issues of material fact, thus what you are trying to shoehorn into the discussion cuts against everything already discussed.

Let me see if I got this right. When a issue is required to be proved by C & C, and the Supremes command a court to assess whether the evidence adduced is sufficient to meet that standard, you still contend that on summary judgment a court can itself determine the legal issue under dispute without ever considering whether the alleged undisputed facts meet the C & C standard?

Take i4i for example. Assume the after discovery, i4i and MS had filed cross motions for SJ. Neither party disputes the facts, indeed, they submit an agreed statement of the facts. MS contends the evidence renders the patent claims invalid as obvious as a matter of law. i4i contends the evidence is insufficient to meet the C & C standard.

If the court does not have to consider the C & C standard, the court could hold the claim invalid based on the evidence. That is exactly what MS is agruing to the Supremes. On the other hand, if the court has to consider the C & C standard, the court could hold that MS evidence does not meet that standard as a matter of law and render judgment for i4i.

In either case, the court renders judgment. In neither case does a court send the case to the jury.

Is it still your contentiion, that the court can ignore the C & C standard and simply decide the issue? Or is it your contention that the court must send the case to the jury if the undisputed evidence does not meet the C & C standard as a matter of law?

IANAE, your position, if I understand it, cannot be that if the evidence cannot meet the C and C standard as a matter of law it raises a triable issue of fact. Alternatively, if you ignore the C & C standard, MS could have received SJ here on evidence that cannot meet the C & C standard as a matter of law.

But, since the courts decide cases all the time based on patents without ever mentioning the C and C standard, I submit to you that patents inherently meet the C & C standard allowing the court to ignore the issue on SJ. If this is not correct, and if patents do not inherently meet the standard at least of "convincing," then there is something wrong in granting SJ on obviousness if there is any doubt.

When an issue requires C & C to prove, the Supremes In Harte-Hanks Communs. v. Connaughton, 491 U.S. 657, 685-686 (1989), required a court to assess on summary judgment, in addition to determining whether there were any disputed facts, whether evidence adduced in support of the issue requiring C & C be sufficient to meet the C & C evidence standard — otherwise SJ would be required.

As usual, I don’t read your case the same way you do.

Harte-Hanks wasn’t a summary judgment case, it was an appeal from a jury verdict. The question on appeal was whether there was sufficient evidence that a reasonable jury could have found clear and convincing evidence of actual malice, based on a number of questions of fact that were before the jury. So obviously the sufficiency of the evidence came into play. And equally obviously, there’s very little insight into the actual fact-finding process or what particular facts were found.

I don’t believe this case supports your thesis that the standard of proof can be relevant on summary judgment. Which is probably why it hasn’t been applied in that context.

IANAE, I’m not so sure you saw my post at the end of this thread so I will essentially repeat it here.

When an issue requires C & C to prove, the Supremes In Harte-Hanks Communs. v. Connaughton, 491 U.S. 657, 685-686 (1989), required a court to assess on summary judgment, in addition to determining whether there were any disputed facts, whether evidence adduced in support of the issue requiring C & C be sufficient to meet the C & C evidence standard — otherwise SJ would be required.

What this seems to suggest is that there can be undisputed facts supporting obviousness that nevertheless are insufficient to carry the evidentiary burden.

Something like that actually happened in this case, the i4i case, where the Feds held that the kind of evidence Microsoft introduced was, as a matter of law, insufficient to carry its burden under C & C.

So, I am going to suggest once more, assuming C & C survives this case, that the Feds need to assess the sufficiency of the evidence of invalidity under C & C in addition to determining whether there are any disputed facts. If the evidence is insufficient as a matter of law, the court and the Feds should simply hold the patent valid and refer nothing to trial.

IANAE, I think the below Supreme Court case may help us. There the Supremes held that when “clear and convincing” evidence is required to proove an issue, the court on Summary Judgment must determine two things:

1) Whether there is a triable issue of fact. And, even if there is no such triable issue:

2) Whether the evidence adduced is sufficient to prove the issue by the clear and convincing evidence standard.

The Supreme Court case is recent; but it holding does not seem to have been applied by the Federal Circuit.

“we seem to think that the legal conclusion can be separated from the facts”

Ned,

No one is making that point. No one.

The point immediately in front of us is the point of SJ. SJ is only reached when there are no issues of “material” fact. If that be so – the fact finder is excused, and so is the weighing done by the fact finder. The fact finder dont get to apply the law in a weighted manner – cause all the facts are agreed upon. Only the law itself is left, and the law is binary.

Yes – the law is even binary for obviousness. The only way to save the weighing is to show the court during the appropriate time that there are issues of material fact. If anything, given the fickle nature of “obviousness” in comparison to “novelty”, if the two sides are battling and “obviousness” is at play, one should be very careful of agreeing with one’s opponent on such facts (chances are either you or he are making a big mistake).

Waitress,

Bring a pitcher every ten minutes until we pass out, then bring one every half hour.

Arrrgh!! We are arguing in circles. All this tells me is that "obviousness" is a mixed question of law and facts and that one cannot (easily?, or at all?) separate the one from the other. If as you say, there is a genuine dispute as to what the undisputed facts prove, the matter should go to trial because there is a dispute of "fact." At face value, this seem odd.

But what you seem not to acknowledge is that there are myriads of cases where the matter is resolved on summary judgment where the facts are not in dispute, but the legal conclusion is. This is where the court makes the call based on the law. Again, given that the call is made based on judgment of what would be obvious to one of ordinary skill based on clear and convincing evidence, the court should
resolve doubts in favor of validity and require a trial where the jury would decide the issue if there is any doubt.

“If the law is that the trier of fact must find the evidence clear and convincing, what does that mean on summary judgment when the fact are undisputed but still there is disagreement about the legal conclusion? Do we submit that legal conclusion to the jury? Again, I don’t think that is necessary or correct.”

Let’s observe this a step at a time.

“the law is that the trier of fact must find the evidence clear and convincing”

All well and good. What this means is that for any piece of evidence presented, the trier gets to say whether it is black or white, good or bad, and bases his decision on a clear and convincing standard. We get a binary result on the piece of evidence.

“what does that mean on summary judgment when the fact are undisputed but still there is disagreement about the legal conclusion?”

THis one is easier than ya might imagine. Since weza already know that all the facts are undisputed – the have all been turned into Black and White – Go or NO/GO, the trier of fact’s role is over. It dont really matter that the trier of facts (or even one or both parties) disagree about the legal conclusion – CAUSE IT AINT UP TO THEM. They can disagree all they flippin want to. Their part of the job is done. Now the Judge (who in the SJ mode be the one deciden) applies the law point blank – there is no C&C or mere preponderance standard in play. – Not at the SJ level.

Now Ned-O – ya might be gettin confused in your head on a non-SJ matter. Let’s paint the situation a little different and say that for whatever reason, SJ fails to dismiss the matter and the case goes the distance. Well, now weza got a slightly different situation, as now, the Judge be the one that esplains the law that is to be applied by the triers O fact and the triers apply that solid law to all the items done put before it. Some of those items by Black, some be White, some be 49% and some fail C&C. Now it be the trier of fact that be applying the binary law to the spectrum of evidence and it be that spectrum that must meet the current C&C (and future mere preponderance) standard for the law’s still binary decision to apply.

Obviousness is like the “reasonable man” in torts. However, unlike torts, we seem to think that the legal conclusion can be separated from the facts. It is quite apparent from this discussion, that that is a difficult proposition even from a theoretical point of view.

For example, I have seen case after case where obviousness was resolved on summary judgment when the evidence (patents) and ordinary skill were otherwise undisputed. But I do not recall any court at any time suggesting that he must be convinced, rather than just persuaded, that the claims were obvious. They simply make judgment calls. And, when their decisions are reviewed on appeal, the Feds make similar judgment calls. The problem is, they never seem to understand that they have to resolve reasonable doubts in the favor of validity.

Your example of the kid applies well to anticipation, but does not apply well to the issue of obviousness, does it?

It applies to any law applied to any set of undisputed facts. The totality of circumstances is nothing more than a bunch of facts. The knowledge and skill of a person skilled in the art is a bunch of facts. Either the parties agree on them, or the non-moving party gets the benefit of any and all doubt.

If there’s any uncertainty that might invoke a standard of proof, that means there’s a dispute of fact and summary judgment is improper. Doesn’t matter what legal rule is at issue.

how do we decide that one of ordinary skill would deem the risk to great?

You don’t, because that’s not part of the legal rule here. The rule is “you must be this high to ride”. But if that were part of the rule, you’d have a finding of law as to how much risk is too great, a finding of fact as to how much risk there is, and a yes/no answer on the ultimate issue.

Consider the kid and the ride once more. If the law is that the trier of fact must find the evidence clear and convincing, what does that mean on summary judgment when the fact are undisputed but still there is disagreement about the legal conclusion? Do we submit that legal conclusion to the jury? Again, I don’t think that is necessary or correct.

No, of course not. The legal conclusion is a question for the judge, when the facts are undisputed. That’s what summary judgment is. It’s the judge’s job to settle any disagreement about the legal conclusion, and he doesn’t need any help from random people off the street.

Even when the facts are disputed and put to a jury, it’s still up to the judge to decide what findings of fact would be sufficient to trigger the legal rule. The jury only needs to be clear-and-convinced of those facts, and if so the legal conclusion automatically follows.

Your example of the kid applies well to anticipation, but does not apply well to the issue of obviousness, does it? Imagine if the law was that the kid could be kept off the ride if in the opinion of the conductor the kid would be placed in an undue risk of harm based on a totality of circumstances. But that is what obviousness seems to be about, does it not? Totality of circumstances and the opinion of an person of ordinary skill.

Now, here, when the evidence is undisputed as to the child’s height and physical condition, how do we decide that one of ordinary skill would deem the risk to great? This is a judgment call and the issue really is whether the call was “reasonable.”

Consider the kid and the ride once more. If the law is that the trier of fact must find the evidence clear and convincing, what does that mean on summary judgment when the fact are undisputed but still there is disagreement about the legal conclusion? Do we submit that legal conclusion to the jury? Again, I don’t think that is necessary or correct.

But the court deciding the case still must be convinced, based on the undisputed evidence, that the claims would have been obvious to one of ordinary skill, etc., etc. “Convinced.” This means more than just that legal conclusion is more likely than not.

I wonder if there are any cases or law review articles anywhere that talks about this issue?

Im tryin hard to paint your “I agreed a long long time ago that facts can be established and agreed to. But that does not mean that the patent should be declared to be invalid.” quote into some kinda position where you think applying the law itself requires some notion of presumption of the law to be applied. Do ya think that there are options to which law is to be applied based on some presumption or another? I mena, once the facts are locked in, they be what they be. Those that are white be white. Those that are black, be black. Those at 49% dont make the 51% cut off. Those not at C&C get tossed. Are ya saying that judges can apply the law in an “iffish” way, bending things to their point of view? (O course, this question is not mean in a legal realist point O view, where we know that Judges simply do what they want to do).

If the facts are undisputed, the court can reach the legal conclusion. But, here, the standard still must be that the court must be “convinced” that the patent is invalid, not just that it is more likely than not that it is.

That can’t possibly be right. Once the facts are not in dispute, there are no degrees of persuasion or standards of proof.

The judge decides what the law is, and then the application of the law to the (agreed) facts is strictly binary. The law either applies or not.

Imagine an amusement park ride where you have to be four feet tall to get on (the “law”). Imagine further that the guy in charge of the ride can only turn you away based on clear and convincing evidence.

Now, to the facts. Kid A shows up, three feet tall. The ride guy looks at him and is immediately satisfied that he’s too short, and validly turns him away.

Kid B shows up, standing 3’11”. Ride guy has gotten pretty good at this by now, but he still can’t eyeball the difference between Kid B and the legal threshold. He could have rejected Kid B on a balance of probabilities, but he can’t reject him as the law stands without better evidence. He achieves this “finding of fact” by making Kid B stand next to a sign indicating a four-foot height, and now he’s convinced.

Kid C shows up. Kid C admits he’s 3’10”, but since his hair is four inches high he argues he should be allowed on the ride. Now, we have a pure question of law where the facts are not in dispute.

How do we handle Kid C’s case? We find a “judge” who will decide as a matter of law whether or not hair counts toward eligible height. There’s no standard of proof involved here – the law is the law. Once that determination is made, Kid C is either tall enough or not. There can’t possibly be any uncertainty because the end result is an inevitable consequence of the legal ruling, and therefore no standard of proof comes into play. The judge could never be more convinced or less convinced, because the facts are predetermined and the law compels the result.

IANAE, where is this 85% certainty come from? I think you are making things up here.

Nice catch, Ned.

Yes, I used an arbitrary percentage to highlight a point. I chose one that is generally considered better than the “clear and convincing” threshold. I’m trying to show you that being clear-and-convinced of individual facts and being clear-and-convinced that the defendant should win are not the same thing. You’re trying very hard not to see that.

Huh?

I agreed a long long time ago that facts can be established and agreed to. But that does not mean that the patent should be declared to be invalid. There is a legal conclusion as well. They are not the same thing.

The parties can both agree that the facts are undisputed. But they still will not agree that the facts render the claim invalid. Does the disagreement make the issue triable to the jury? I think not. The jury is supposed to find facts, not legal conclusions.

Under your theory of “facts” and “C & C,” if the only disagreement is whether the claims are invalid over the undisputed evidence, for example, patents, summary judgment would be improper. Yet it happens ALL THE TIME.

The bottom line is that your theory of C & C cannot be correct.

Which leads me again to my point. If the facts are undisputed, the court can reach the legal conclusion. But, here, the standard still must be that the court must be “convinced” that the patent is invalid, not just that it is more likely than not that it is.

IANAE, where is this 85% certainty come from? I think you are making things up here.

Nice catch, Ned.

Yes, I used an arbitrary percentage to highlight a point. I chose one that is generally considered better than the “clear and convincing” threshold. I’m trying to show you that being clear-and-convinced of individual facts and being clear-and-convinced that the defendant should win are not the same thing. You’re trying very hard not to see that.

But, in contrast, the evidence that the means have been around for so long should be decisive on the issue of obvious despite the fact that combination was well within the skill of the art.

No, secondary considerations are never “decisive” like that. They’re secondary, and you need to know the reasons behind them before you can determine their significance to the case.

For example, what was a twelve-year-old doing with a pencil, an eraser, and an interference ring that fit them both if the pencil-with-eraser-on-one-end hadn’t yet been invented? It sounds like at least one of those components is art that would not have come to the attention of said non-inventive twelve-year-old.

Now, what to make of a combination that was technically obvious but for the fact that nobody (in the real world) was aware of the art? Well, that also depends. If the art is some obscure patent directly relevant to that art, the claim is still obvious. A real life person would never have made the combination in a thousand years because he was not aware of that art, but a notional person of ordinary skill in the art would have been aware of the art and would have arrived at the invention immediately. The secondary consideration is then no consideration at all.

How do you decide this case?

The same way you’d decide any case. How do you determine fault in a car accident case where one driver was drunk, the other driver had rusty brakes, and the road was wet and slippery? (Assume that you’re not allowed to apportion the fault between the parties, or invent your own facts where that’s the case.) You consider all the facts and then decide whether, on balance, you’re more convinced than “this much” that the party working to overcome the presumption should prevail.

Max, since the means were known and the solution trivial once one was motivated, it seems to me that Europe would always find the claimed pencil/eraser obvious regardless of the technical problem stated.

What I find interesting is exactly what was it that prompted the inventor to act?

We have a Supreme Court case that said the invention can be the “recognition” of the problem, even if the solution to the problem was trivial from a mechanics point of view.

Do you think that they care at all about “it is hard to set a fair to inventors, objective, bright line obviousness test. So I like to deny that KSR defines the PHOSITA in this way.“?

The CAFC may care very much for objective bright line rules. It was their mandate when they were created by Congress. Only problem being – Congress cannot create or mandate a court that has a last word over and above the Supreme Court. Just the way it is.

One obvious side effect: in any p_ssing match, guess who wins (hint: it is not the objective, fair minded brightline folk).

Ned, this is a trivial case for the EPO problem and solution approach. But, under that, we must explore obviousness on the filing date, after the spec is written, and it is obligatory and necessary to give full faith and credit to what the inventor wrote about the “technical problem” addressed and solved by the claimed subject matter.

So EPO-PSA won’t work in First to Invent America which is, I think, a shame.

You rely on KSR’s “ordinary creativity” to demonstrate that the law holds the notional PHOSITA to be imaginative.

I still say that the PHOSITA of ordinary creativity is nevertheless without imagination. My complaint is that, once you endow the notional PHOSITA with universal knowledge of the state of the art, plus creative imagination, it is hard to set a fair to inventors, objective, bright line obviousness test. So I like to deny that KSR defines the PHOSITA in this way.

Indeed, looking glass, IANAE seems to be struggling here. I agree that “convincing” has to be related to the legal conclusion. The facts can be given, but that does not mean that the legal conclusion is established.

But I still am not sure whether obviousness and being with the skill of the art are the same thing. See my example of the pencil/eraser invention. The combination is trivial, well within the skill of the art. But, does that mean it was obvious?

I think the Supremes in Greenwood would have said yes. Is being within the skill of the art even relevant if the question really is what would prompt someone to make the combination?

IANAE, where is this 85% certainty come from? I think you are making things up here.

Take, for example, a claim is to a pencil with an eraser attached at one end with an "interference fit" ring of metal. The prior art shows pencils, erasers and interference attachment rings. The level of skill required to make the combination is that of a twelve year old boy of average intelligence. The only motivation known to combine them is efficiency. Yet, the evidence shows that pencils, erasers and interference attachment rings existed side by side with each other for 1000 years.

All of the above is undisputed. The facts are undisputed. Everything is undisputed but the legal conclusion.

On the one hand, the combination is trivial given the
means and the skill. But does this make it obvious? In some sense it does, as that is how one can read the Greenwood case. But, in contrast, the evidence that the means have been around for so long should be decisive on the issue of obvious despite the fact that combination was well within the skill of the art.

How do you decide this case? How "convinced" must you be that the claimed combination is obvious? Is there a rule? Does long felt need trump a case where the combination is so well within the ordinary skill in the art?

So ping, I did hit on the expression you wanted me to “learn” then, namely, “ordinary creativity”?

Now tell me, who said “ordinary creativity” corresponds to the presence of any finite degree of “imagination”.

For example, how much “imagination” does it take casually or carelessly to release, or “create” (in the very “ordinary” (geddit?) manner of the skilled practitioner of entirely and indisputably “ordinary” skill in the art) an emission of gas from your very own bodily orifice?

By whatever evidence you have, to maximize the extent to which the trier of fact is convinced of the ultimate conclusion.

Suppose you have five facts to prove (the presence of five claim limitations, maybe), and you can show each of them to 85% certainty, but all of them need to be true to make your case. You might satisfy the clear-and-convincing burden on each individual fact, but you’ve only made a 44% case that you should win your case on the merits.

That’s why it’s misguided to talk about individual facts or pieces of evidence being convincing enough. What really matters is how sure we are that the patent is invalid, as compared to how sure we need to be.

Now, in summary judgement, if the facts are undisputed, the legal conclusion drawn from them must still have a standard.

No, that’s simply not true. The legal conclusion is an effective certainty, because the judge makes a definitive statement of the law. The facts (which are themselves certain for the purposes of SJ) either invoke the application of the law or not.

The only thing that can affect the result is whether the judge got the law wrong, but then you go on appeal and there’s similarly no uncertainty there. Whatever two judges agree to is the law. Period.

IANAE, “convincing” has to relate to the legal conclusion as you did suggest before. The Supremes in Deere said, however, that the facts and the legal conclusion were different topics. So, one can establish facts, by what standard?, but the legal conclusion from them must be that the fact convincingly establish the legal conclusion.

Now, in summary judgement, if the facts are undisputed, the legal conclusion drawn from them must still have a standard. Preponderance? Convincing? No Doubt? No reasonable doubt? There are differences.

However, I have never heard, and you too seem to be unaware of, any judge, district or appellate, mention the legal standard when making the call on obviousness.

So, I think there is some thing wrong with the Federal Circuit’s here.

It would be interesting to see if the issue was raised in non patent matters where the facts were undisputed but still the law required a hightened standard because the call is based on judgment. I can’t think of an analogy off hand, but there has to be one.

Gee, maxie, maybe cause you just got done sayin: “ping it is no fun with you. I’m bored” and I was learning ya KSR, which now, the light bulb goes off and you exclaim “Bingo“. And before ya ask – compare this mental state with your original quote of “to that notional all-knowing, all-unimaginative, legal fiction, the person of ordinary skill in the art”

Ya see – even though ya throw out an “I’m bored”, ya still learned somethin from me today.

And that be even with not reading a wet Wall Street Journal cozied up in a narrow bed (inside joke).

Now I know why PTO Examiners are rejecting everything. The level of creativity displayed by the inventor just ain’t extra-ordinary enough. This reminds me of the old world in Germany, when it took a higher level of obviousness to invalidate a 20 year patent than a 10 year petty patent. The German Supreme Court eventually had to abandon that thinking, as unworkable, under the sceptical scrutiny of the patents judges of the rest of EPC-land.

Trolling for comments and chuckles on the other hand – hey that dont need to be boring and no fun (unless O course, the chuckles are coming at your expense and then the “no fun” aspect kicks in again).

“ do not anyway understand how “imagination” comes into it, when the issue is”

The key part is “the issue” and the observation I lay on ya (teh golden observation) is that the legal fiction be not “all-unimaginative” – a direct quote from you. The legal fiction has imaginative powers. I directed ya to KSR cause there they esplain this.

Pick up on that first and then we casn get to the other pick up. One step at a time for you Maxi.

Then we are agreed that “convincing” has very little to do with whether the evidence is “clear?”

You do love that phrase, don’t you? Always fixate on either the “clear” or the “convincing”. It’s a single standard, and all it means is “more sure than balance of probabilities, but not necessarily beyond a reasonable doubt”. The name is just a name.

I don’t think a finder of fact would be very convinced by evidence that is “unclear”, however you understand that term. I also don’t think a finder of fact would often be unconvinced by evidence that is “clear”.

Now, will you please allow both of those words re-entry into the English language without constantly pointing out that I used one without the other?

It seems they simply call it as they see it, giving no deference to a presumption of validity to resolve doubts.

If you’re still talking about summary judgment, the standard doesn’t apply at that stage. The facts on summary judgment are either agreed or determined by law (i.e., not up for debate at that stage), and the law is the law. There’s no room left for doubt, or convincing, or probabilities.

When was the last time you saw a judge faced with undisputed facts who said “I’m not really sure how the law applies here, but I sort of think it leans toward the plaintiff’s side”? They don’t. That only happens when you ask questions of fact, like “would a person skilled in the art have been able to combine reference A and reference B to arrive at claim C?”

I see no point in daydreaming of “omnipotence”. Did you mean omniscient? I do not anyway understand how “imagination” comes into it, when the issue is how much of the state of the art is known to the notional PHOSITA.

Sorry Ned, I’m not a lawyer, so I don’t understand your question. Whether something is “obvious” under a patent statute is a judgement of law based on underlying facts. Just because a published patent announces that (say) molecule X cures disease Y does not make it a fact that this prior published patent constitutes a hint or suggestion effective to motivate PHOSITA to try using X to cure Y. It might depend what else is in the published patent. Is it homeopathy, for example.

At least in England, when the litigating parties are in dispute as to whether something is fact, they adduce evidence from respective technical experts, at trial, under cross-examination, within a few feet of the closely observing judge. The judge will then find the facts, on the balance of probability. On those determined facts, the legal judgement “obvious Y/N” is made by the (experienced, technically qualified, specialist patents) judge.

“been obvious, to that notional all-knowing, all-unimaginative, legal fiction, the person of ordinary skill in the art who is blessed with total knowledge of the entire state of the art.”

With KSR, the legal fiction is no longer all-unimaginative, but has the normal imagination and common sense to know all the entire state of the art in his particular art field andany art field that may provide a common solution.

For a legal fiction “common” person, it must be nice having such omnipotence.

Sorry Ned to have included an unnecessary word, “enabling”. You are right that it belongs in a discussion about novelty. But, for obviousness, my point remains. First one has to fix what actually is in “the state of the art” ie what has already been “made available” to members of “the public” by written or oral disclosure, by use, or in any other way. Having done that, then your trier will determine whether, as of the date of that claim, anything within the ambit of the claim under review would have been obvious, to that notional all-knowing, all-unimaginative, legal fiction, the person of ordinary skill in the art who is blessed with total knowledge of the entire state of the art.

The date of the claim is of course a Patent Office filing date ie a date after the inventor has written his specification for filing at the Patent Office. In First to File jurisdictions therefore, one can examine the pre-existing text of the app as filed and compare it with the state of the art, to find out whether or not the claim covers something that is obvious. You don’t do that in the USA, do you?

When the United States Supreme Court decides Microsoft v. i4i, which should happen sometime before the Court recesses in June 2011, we may have a very different patent landscape. By now most probably are aware of the fact that the Supreme Court has been asked by Microsoft and a swarm of amici to reduce the standard of proof necessary to invalidate patent claims. By definition a patent claim that is easier to challenge is one that is weaker, so don’t be fooled by the pretenders who dismiss this case as meaningless and charge the patent community with crying wolf. Anyone who isn’t willing to admit that lowering the presumption of validity will have extremely negative implications for innovators as a result of weaker patent rights is either not paying attention, isn’t very knowledgeable about patent law or simply has an agenda.

When the United States Supreme Court decides Microsoft v. i4i, which should happen sometime before the Court recesses in June 2011, we may have a very different patent landscape. By now most probably are aware of the fact that the Supreme Court has been asked by Microsoft and a swarm of amici to reduce the standard of proof necessary to invalidate patent claims. By definition a patent claim that is easier to challenge is one that is weaker, so don’t be fooled by the pretenders who dismiss this case as meaningless and charge the patent community with crying wolf. Anyone who isn’t willing to admit that lowering the presumption of validity will have extremely negative implications for innovators as a result of weaker patent rights is either not paying attention, isn’t very knowledgeable about patent law or simply has an agenda.

“The “clear and convincing” bit isn’t about the inherent or objective reliability of the evidence. It refers to how convinced one must be of the ultimate legal issue.

cf

“No, the reason you don’t see any discussion of the standard on summary judgment is that there is no standard of proof on summary judgment. The facts are either agreed between the parties or found in favor of the non-moving party, and the question becomes “here are the facts, what law applies to them?””

You just made the same mistake that you judged Judge Markey of making – At first you say the standard has to do with the legal issue, then you say the standard has to do with the facts.

Then we are agreed that “convincing” has very little to do with whether the evidence is “clear?”

Rather, convincing seems more attributable to the trier of the ultimate legal conclusion. That person must be “convinced.”

So, what do we have when the Feds review an obviousness verdict based on undisputed, clear evidence? It seems they simply call it as they see it, giving no deference to a presumption of validity to resolve doubts.

If this is right, and I don’t recall of a case where they suggested that doubts had to be resolved in favor of validity, there is something wrong with the Federal Circuit’s jurisprudence in this area.

Thus, when the prior art consists only of patents, and there is no dispute as to the date of the patent, or level of skill in the art, or secondary considerations, the issue of obviousness can be resolved on the record as a matter of law.

Right, there is no standard of proof issue on questions of law. And yet, not every case is amenable to summary judgment on the issue of obviousness. Why not?

Because there are often questions of fact about the level of skill in the art, whether the references are analogous, whether the references can be combined, and what combination would result.

So, yes, the standard is irrelevant when the prior art consists only of patents (or non-patents that everyone can agree on) and nobody disagrees about anything else. But that’s not as many cases as you think.

In the United States, I believe this question primarily relates to anticipation – whether the reference discloses the invention. However it seems that in Europe, it also may relate the obviousness. Is this correct?

It seems to me that when prior art consists of patents, it normally comes down to the issue of whether the claimed invention is obvious. This is a question of law, not a question of fact. Thus, when the prior art consists only of patents, and there is no dispute as to the date of the patent, or level of skill in the art, or secondary considerations, the issue of obviousness can be resolved on the record as a matter of law. I don’t think that “convincing” has anything to do with the legal conclusion one draws from reliable evidence. It only has to do with the quality of evidence.

At the EPO, nobody disputes the date of publication of an issued patent, cited as prior art. But be sure there will usually be an argument about what exactly it “makes available” to a person skilled in the art and, after that, whether its “disclosure” is enabling.

Contrast that with a disclosure of information(asserted to be within the state of the art) and asserted to have been made available to at least one member of “the public” by use of something. Here, the argument is not only about the “what” but also about the “when” and the “how”.

Judge Markey in the original discussion of “clear and convincing evidence” described patents as the kind of evidence that inherently meets the clear convincing standard.

Sad to see a judge who doesn’t even understand what a standard of proof is for.

The “clear and convincing” bit isn’t about the inherent or objective reliability of the evidence. It refers to how convinced one must be of the ultimate legal issue.

The disclosure of a patent application is never subject to any doubt or questions of credibility, because all that matters is what was published and when. Nobody disputes that.

However, what must be clear and convincing is whether or not the disclosure renders the claim invalid. That’s more than just being sure of what the prior art says. The parties will disagree on what the disclosure means to a person skilled in the art, whether references can be combined or modified, and what would result from that combination or modification. At the end of all that, you need to be convinced enough that the patent is invalid.

Just because patents are proof of the publication of their contents, that doesn’t put them beyond reproach no matter what the standard of proof is.

This is why you see so many cases resolved on summary judgment without any discussion of the clear and convincing standard when the prior art at issue are patents.

No, the reason you don’t see any discussion of the standard on summary judgment is that there is no standard of proof on summary judgment. The facts are either agreed between the parties or found in favor of the non-moving party, and the question becomes “here are the facts, what law applies to them?”. The judge never needs to decide how convincing the facts are, and there’s no standard of proof on questions of law.

the historical standard being recognizable as being “beyond a reasonable doubt.”

Max, patents, in contrast to let’s say an advertising brochure, describe detail how something is constructed and made and used, and it’s effective prior art date is reliable. Judge Markey in the original discussion of “clear and convincing evidence” described patents as the kind of evidence that inherently meets the clear convincing standard.

This is why you see so many cases resolved on summary judgment without any discussion of the clear and convincing standard when the prior art at issue are patents.

I believe the AIPLA brief recognizes that patents inherently are kind of evidence needed to invalidate a patent. In contrast, where the evidence is of prior use or nonpatent publications, issues of clear and convincing evidence become paramount.

The AIPLA brief explains exactly what is meant by the “heightened” burden the infringer must meet when a reference has been before the patent office. It means that must additionally convince the trier fact that the examiner was wrong. I think this is the first I’ve ever heard of this explanation, but it makes sense.

Once one understands the above, one can clearly understand what Microsoft is attempting to do here. They are trying to reverse two centuries old law that evidence of prior use and prior invention has to be proved by more than just a preponderance of evidence, the historical standard being recognizable as being “beyond a reasonable doubt.”

I have said this before and I’ll say it again here, what Microsoft is attempting to do here is outrageous.

IANAE You can reiterate it all you want, and I’m even inclined to agree with you, but you can’t actually prove that there is no structural difference.

The “laws of nature” are such that no structural difference can exist, IANAE. The PTO doesn’t have to “prove” anything. The applicant’s specification, describing the dilution process, proves the absence of any structural difference.

For all we know, there might be some undiscovered (maybe even undetectable) subatomic structural difference that provides a therapeutic effect in some cases.

Again, according to this reasoning, enablement and utility are now irrelevant considerations. So, too, are 102 and 103 because I can merely say “My compositions have have an effect shown in my graph. They may appear to be old, but there might be some undetectable subatomic structural difference.” This sort of argument is nearly identical to that used by proponents of treating product-by-process claims as new compositions. The argument failed, and rightfully so.

The examiner may well believe that only water remains in the solution, but he doesn’t have access to the solution.

He doesn’t need access. The laws of nature tell us that when a solution with 10 molecules in it is diluted by a ten million fold in water, there is less than one molecule remaining in the solution, i.e., the solution is identical to water.

all the evidence of record suggests that the formulation as prepared works as described.

Wrong. All the evidence of record suggests that the experiment is flawed or the applicant is lying — exactly as is the case with perpetual motion machines.

“Use as a placebo can NOT be the sole utility for a composition.”

Of course it can.

Really? I guess all those ESDs were patentable, then. They certainly could have been used in a placebo. And no FDA issues, of course, if they are homeopathically administered.

What if you invented a way to make a really nice-looking fabric that had all the relevant physical properties of prior art fabric, but was visually really appealing to fashion-conscious consumers? Is that a credible utility?

Apples and oranges. For starters, that’s a method claim, not a composition claim. And you would never be allowed a composition claim to “A really nice-looking fabric that had all the relevant physical properties of prior art fabric, but was visually really appealing to fashion-conscious consumers.” You’d have to provide the structure, and it would have to be new and non-obvious.

Your statement that it’s water as far as you can tell is neatly contradicted by someone demonstrating that it does something water can’t do.

Nobody has ever done this, just like nobody has traveled back in time in their flying saucer or invented a perpetual motion machine. Saying “I did it” doesn’t change that basic fact. Hence Randi’s $1,000,000 challenge and hence our agreement that the USPTO’s issuance of junk homeopathy patents is an embarassment.

All he needs to know is how to make a composition that has the desired effect

Again, the composition is water, and nobody has ever taught anyone how to make a homeopathic solution that has “the desired effect”, unless the effect is the placebo effect (and that is not how homeopathic therapy is believed to work by the quacks who peddle it (assuming they actually believe it))). The placebo effect can not be the sole credible utility for a composition, for the reasons I’ve already explained. To reiterate, if such a utility is deemed “substantial” for 101 purposes, then there is effectively no utility requirement because any composition can be used in a placebo, just like any composition has “utility” as a microscopic component of filler in pet food (after you grind it up, anyway).

“If one takes your arguments to their logical conclusion, then enablement and utility are utterly worthless.”

They’re not worthless. They’re exactly what they’ve always been. A study showing that your invention works is taken at face value, unless it’s explicitly contrary to the laws of nature as understood. The homeopathic inventions get the same treatment as the pharmaceutical inventions, which also wouldn’t stand up to much scrutiny at the time of filing.

“I will reiterate again the indisputable fact: there is no structural difference between a homeopathic solution and water (or whatever other solvent is used to dilute the homeopathic ‘agent’). If your position is that one can create an irrebuttable difference out of thin air merely by saying that ‘there is a difference’, I will simply note that you are wrong.”

You can reiterate it all you want, and I’m even inclined to agree with you, but you can’t actually prove that there is no structural difference. For all we know, there might be some undiscovered (maybe even undetectable) subatomic structural difference that provides a therapeutic effect in some cases. Even if it’s never been documented before, that’s not proof that it couldn’t happen next time. A reasonable conclusion to draw, certainly, but not proof.

The examiner may not rebut a substantiated claim of utility by simply stating that he doesn’t see how the invention could work. Even if the inventor himself can’t see how the invention could work, that’s no bar to patentability if the invention actually works.

“Here’s another law of nature: water does not have a ‘memory’ whereby infinitely diluted solutions retain properties of solutes that were in contact with the water at some point in the past.”

That’s not actually a law of nature. It’s simply a restatement of “homeopathy is bollocks”, and it’s a statement that would never have existed in the first place if some crackpot hadn’t come up with homeopathy.

“Do you think Randi worries about losing that $1,000,000 challenge?”

Of course not. Partly because I assume that million dollars is all donations and pledges, partly because he doesn’t expect to actually be taken up on it, and partly because he sincerely believes (as we both do) that homeopathy doesn’t work.

Here’s a question for you. How do you think Randi would feel if he lost one of his million dollar challenges fair and square? I think he’d be pretty impressed, and he’d change his personal beliefs right quick.

“The PTO can point out that the indicated dilutions are such that only water remains in the solution, such that any observed effect is necessarily due to some unclaimed feature not described, or is the result of the placebo effect, which has nothing to do with the claimed composition.”

All that is argument based on assumptions of facts that the PTO has no way of proving. The examiner may well believe that only water remains in the solution, but he doesn’t have access to the solution. He may believe that the observed effect is due to some unclaimed feature, but that doesn’t matter because all the evidence of record suggests that the formulation as prepared works as described. The examiner’s rejection would be particularly weak if the applicant had studied his formulation with a placebo control.

“Use as a placebo can NOT be the sole utility for a composition.”

Of course it can. It’s a special case of use to make an equally useful article more desirable to the purchaser. What if you invented a way to make a really nice-looking fabric that had all the relevant physical properties of prior art fabric, but was visually really appealing to fashion-conscious consumers? Is that a credible utility?

“the patent I referred to above recites homeopathy in the claims.”

Only as a shorthand to describe the process of manufacture. Nothing wrong with that. It’s no different from explicitly reciting the serial dilutions.

“I’ll say it again: homeopathic solutions made with tap water are structurally identical to tap water. Merely providing some data ‘showing’ that administration of the infinitely diluted solution to mice (or some other animal) has an effect can not be sufficient, as a matter of law, to prove a structural difference between the diluted solution and water.”

Actually, that data makes all the difference. Your statement that it’s water as far as you can tell is neatly contradicted by someone demonstrating that it does something water can’t do. The only logical conclusion (assuming the study is valid) is that there is a difference from tap water, you just can’t see what the difference is.

“it’s purely functional language that tells the skilled artisan nothing about the structural differences between the claimed composition and the prior art.”

It’s not functional language, it’s product-by-process language. The skilled artisan doesn’t need to know what the structural differences are or how the claimed composition does what it does. All he needs to know is how to make a composition that has the desired effect, and that is quite distinctly claimed.

IANAE, I remain unconvinced that the PTO has no legal means of disposing of claims to homeopathic remedies (compositions and methods). If one takes your arguments to their logical conclusion, then enablement and utility are utterly worthless.

I will reiterate again the indisputable fact: there is no structural difference between a homeopathic solution and water (or whatever other solvent is used to dilute the homeopathic “agent”). If your position is that one can create an irrebuttable difference out of thin air merely by saying that “there is a difference”, I will simply note that you are wrong.

Your attempt to distinguish homeopathy from perpetual motion machines by resort to the “immutable” “laws” of nature is also misplaced. The “laws of nature” are referred to as such only because an exception to them has not yet been presented. Here’s another law of nature: water does not have a “memory” whereby infinitely diluted solutions retain properties of solutes that were in contact with the water at some point in the past. Nobody has ever violated this law. Ever. In this regard, homeopathic compositions and treatments are no different from perpetual motion machines (except that homeopathic compositions are also anticipated by water). The likelihood of somebody demonstrating the truth of the homeopathic principle is exactly equal to the likelihood of somebody creating a perpetual motion machine, i.e., zero. Do you think Randi worries about losing that $1,000,000 challenge?

it’s not enough for the examiner to say “here is one mechanism that isn’t the way your invention works”.

But that’s not at all what I proposed. Here it is again: The PTO can point out that the indicated dilutions are such that only water remains in the solution, such that any observed effect is necessarily due to some unclaimed feature not described, or is the result of the placebo effect, which has nothing to do with the claimed composition.

Use as a placebo can NOT be the sole utility for a composition. I’m frankly amazed that this would have to be explained to anyone.

There just isn’t any way for the examiner to systematically question the validity of every study in support of every patent application, even if he had the time.

While not true of every patent directed at homeopathic junk, the patent I referred to above recites homeopathy in the claims. The PTO has no excuse for ignoring a red flag like this.

they’d sue you if you put up a big sign saying “my process infringes your patent”,

The claims I’m referring to are composition claims. I’ll say it again: homeopathic solutions made with tap water are structurally identical to tap water. Merely providing some data “showing” that administration of the infinitely diluted solution to mice (or some other animal) has an effect can not be sufficient, as a matter of law, to prove a structural difference between the diluted solution and water. Even if some gullible no-nothing decided it was sufficient, it’s purely functional language that tells the skilled artisan nothing about the structural differences between the claimed composition and the prior art.

Second, it occurs to me that the AIPLA Amicus Brief is much cuter than I had thought yesterday. The missing insight was that its intended reader is not a SCOTUS member at all but, rather, a member either of the Congress or of the AIPLA. Then it makes perfect sense.

Read the article more carefully: “37 patients got open-label placebo — they were told they were getting an inert substance that contained no medication and that the placebo effect is powerful and the body can automatically respond to such pills …”

Further down in the article, a comment from a clinical psychologist: “I think that the key point here is that yes, it’s placebo, but they’re also telling people that this is a placebo, but it’s a demonstrated effective treatment.”

Big surprise, then, that those patients did better than the untreated control group.

The PTO can point out that the indicated dilutions are such that only water remains in the solution, such that any observed effect is due to some unclaimed feature not described, or is the result of the placebo effect, which has nothing to do with the claimed composition.

That would be pure speculation. The applicant doesn’t have to know or disclose the mechanism by which his invention works. Therefore, it’s not enough for the examiner to say “here is one mechanism that isn’t the way your invention works”. Homeopathy isn’t directly contrary to any known law of nature, we just intuitively “know” it’s hokum because (as far as we know) dilution works the opposite way.

That would apply to *any* composition, would it not? Is your position that every composition has utility as a placebo?

Of course not. A placebo only works if people believe it works. Disturbingly many people believe in homeopathy. A number of patents relate to “inventions” that do little more than make the consumer prefer the claimed article over the prior art, and none of them are invalid for the sole reason that the claimed article doesn’t work any better.

My perpetual motion machine may not really work perpetually but if you stand next to it, your cancer goes away. Here’s a graph that “proves” it. Or maybe it’s the placebo effect. I can has patent now?

Sure, if your “graph” is actually a study, and if you don’t claim it as a device for producing limitless energy.

If it turns out your device doesn’t work, nobody’s going to copy it anyway. If it turns out your device does work, your patent will be challenged on the validity of your study. There just isn’t any way for the examiner to systematically question the validity of every study in support of every patent application, even if he had the time.

Similarly, you can quite easily obtain a patent that is clearly anticipated by your own prior public use or sale but otherwise novel. Is it valid? Of course not. Does the examiner have a practical way of rejecting your claims? Of course not.

Of course they would, if I said that my tap water was made in the manner described in their specification.

Right, they’d sue you if you put up a big sign saying “my process infringes your patent”, but if it turned out your tap water was not made that way, they’d lose. And if your tap water was made that way, you’d have a hard time disputing the real world value of the claimed invention.

IANAE If the applicant produces a study, how can the PTO question the findings of that study in any scientifically credible way

The PTO can point out that the indicated dilutions are such that only water remains in the solution, such that any observed effect is due to some unclaimed feature not described, or is the result of the placebo effect, which has nothing to do with the claimed composition.

credible utility as a placebo

That would apply to *any* composition, would it not? Is your position that every composition has utility as a placebo? My perpetual motion machine may not really work perpetually but if you stand next to it, your cancer goes away. Here’s a graph that “proves” it. Or maybe it’s the placebo effect. I can has patent now?

No homeopath would sue you for selling tap water

Of course they would, if I said that my tap water was made in the manner described in their specification. What’s the point of the composition claim if they are not going to sue me for selling it? Homeopathy is a big industry in the US.

Yes, it’s an embarrassment that the PTO issues such patents.

Glad you agree. Such patents seriously undermine the credibility of the USPTO. I’m sure that the Supreme Court would agree, even if most of them have a rudimentary understanding of science, at best.

You can’t “technically” prove a negative. After all, a wormhole in the universe could open based on some action that would provide an exception to the laws of physics as we know it. Is this the philosphy underlying the USPTOs position with respect to nonsensical and ridiculous inventions? If so, why the exception for perpetual motion machines?

The PTO doesn’t prove a negative for perpetual motion machines. It simply says that the asserted utility of all perpetual motion machines inherently contradicts known physical laws, and therefore it’s up to the applicant to prove that his example works.

There is no accepted law of nature that conclusively dismisses all homeopathic formulations as useless in quite the same way as thermodynamics does for perpetual motion. Sure, we all know it’s nonsense, but each individual formulation is nonsense by itself. If the applicant produces a study, how can the PTO question the findings of that study in any scientifically credible way, and should they then do the same for studies on the effectiveness of actual drugs?

And then there’s the question of credible utility as a placebo. Producing energy is not the sort of thing you can fake, but curing headaches and erectile dysfunction are.

Yes, it’s an embarrassment that the PTO issues such patents. But really, they’re no threat to people outside their industry. No homeopath would sue you for selling tap water, for the same reason no homeopath would rise to James Randi’s challenge. I suggest mentally filing them next to the cat-exercising patent.

“What is a patentee to do in court if his claims were granted unexamined and he has had neither opportunity nor cause to amend them? The same simple 102 reference that would have been a mere speed bump in prosecution becomes a roadblock in litigation.”

Don’t look know, but Dim has already discussed this at great length in his conversations with Ned-O.

Seriously though, in the most technical possible sense the “homeopathically potentized” formulation does have a tiny but calculable statistical probability of containing a single antibody.

That’s also true of tap water, in the most “technical possible sense.”

All beside the point, however, because the fundamental theory of homeopathy is that there are in fact no antibodies left in the solution. It’s the “potentized” solution that does the work … according to homeopathic theory (which is junk science).

If the spec says a study proves the formulation does something tap water doesn’t do, the PTO can’t really do very much to challenge the truth of that statement.

Of course they can. Let’s say I file a claim to a “new” composition of water (it’s old water that I put in a jar with a smooth pebble from my driveway, then shook gently 99 times under a full moon – something that has never been done before) and state that the solution so obtained cures cancer and guarantees you live to 200 years old. In support, I provide some description of graphs and experiments that support my claim. Do I get a patent? Obviously my claims are ridiculous, on their face. Your position is that the PTO is powerless to do anything except grant my patent. I think you are mistaken about that.

Until the PTO issues a policy statement lumping homeopathy together with perpetual motion machines, we’re stuck with these.

Since working perpetual motion machines are no less supported by science than working homeopathic solutions, I’m not sure what the PTO is waiting for. That’s without even getting into the fact that homeopathic solutions are anticipated by water.

It doesn’t mean they’re bad at finding prior art for what the claim actually recites, which in this case is a new dosage form of a particular antibody

Very little to do with “finding prior art” and everything to do with an understanding of science and math. The “new dosage form” that is claimed has no credible utility and is anticipated by water.

Randi’s whimsical challenges are great for showing the public that these charlatans have no confidence in the effectiveness of their own products, but they’re not technically proof of anything.

You can’t “technically” prove a negative. After all, a wormhole in the universe could open based on some action that would provide an exception to the laws of physics as we know it. Is this the philosphy underlying the USPTOs position with respect to nonsensical and ridiculous inventions? If so, why the exception for perpetual motion machines?

Will the PTO grant a patent on a method of predicting the fate of an animal based on the position of boats on the Hudson River at the time of the birth of the animal? Of course graphs are available.

The essential point of my comment remains: the idea that a government agency could issue such claims and still be given deference in the form of a presumption of validity is absolutely absurd.

“On the “heightened burden” for art before the PTO, all that means is that the infringer has the additional burden of persuasion that the examiner was wrong.”

Is showing that the examiner was wrong something different from showing that the patent is invalid now? Are litigators going to start sounding like Lionel Hutz? “Ladies and gentlemen, I’m going to prove to you not only that Freddie Quimby is guilty, but that he is also innocent of not being guilty.”

“Note also that such a medicament is anticipated by tap water, which has the same number of antibodies as the “potentized” solution.”

Really? Does tap water treat erectile dysfunction in patent attorneys?

Seriously though, in the most technical possible sense the “homeopathically potentized” formulation does have a tiny but calculable statistical probability of containing a single antibody. Besides, look how well the formulation did in unblinded studies of subjective properties probably conducted by the patentee himself.

If the spec says a study proves the formulation does something tap water doesn’t do, the PTO can’t really do very much to challenge the truth of that statement. At best, they’d get back a sworn affidavit repeating the very same statement. Until the PTO issues a policy statement lumping homeopathy together with perpetual motion machines, we’re stuck with these.

Still, they don’t reflect on anything other than the PTO’s treatment of factual statements it can’t verify (which have always been best suited to adversarial proceedings) and its willingness to let through product-by-process claims that don’t specify the final structure (which they should probably be more careful about). It doesn’t mean they’re bad at finding prior art for what the claim actually recites, which in this case is a new dosage form of a particular antibody.

Also, Randi’s whimsical challenges are great for showing the public that these charlatans have no confidence in the effectiveness of their own products, but they’re not technically proof of anything.

Max, I’ve been and still am busy today. However, I think the AIPLA’s brief also said that patents are the kind of evidence that inherently meet the C & C standard both for content and for dates. I think on this, you would agree. Prior use, on the on other hand, needs some “corroboration” as to both date and content. This requirement has been in the law for 200 years.

On the “heightened burden” for art before the PTO, all that means is that the infringer has the additional burden of persuasion that the examiner was wrong.

The brief, I think, is eloquent and comprehensive. It all ties together.

Magician James Randi, who has devoted the latter part of his career to exposing fraud, scams and charlatans, and a network of skeptics known as the 10:23 Campaign launched a major campaign Saturday against the manufacturers of so-called homeopathic drugs, charging that the companies that sell the drugs are packaging worthless products that are cheating customers out of their money.

Randi also offered $1 million of his own money to any manufacturer of a homeopathic product who could prove that the product actually worked as claimed, and challenged major retailers like CVS, Rite-Aid and Walgreens to remove the products from their shelves.

Given that Randi’s position is scientifically indisputable, why does the USPTO continue to grant patents such as 7,700,096, claiming “A medicament for treating erectile dysfunction comprising a homeopathically potentised form of polyclonal antibodies”?

Note also that such a medicament is anticipated by tap water, which has the same number of antibodies as the “potentized” solution.

Will the PTO also be handing out patents on methods of curing cancer by reciting a new prayer? If not, why not?

The idea that a government agency could issue such claims and still be given deference in the form of a presumption of validity is absolutely absurd.

NAL: “The point too is that the arguments that IANAE advances for reducing the presumption in litigation to a mere preponderance actually reinforces my arguments to abolish the examination system. The more he argues for that point, the stronger my position is made. I realize that this must gall him tremendously, but there is no denying the outcome.”

There is very much denying the outcome. You still haven’t explained how registration plus litigation could replicate the benefit (to both the patentee and the public) of claim amendments and arguments on the record during examination. Those amendments are even more important than judicial deference to examiner-considered art, because they make the claims objectively stronger over that art. That’s why the same art almost never gets cited in litigation, and it still wouldn’t get cited no matter how little formal deference the PTO would have.

What is a patentee to do in court if his claims were granted unexamined and he has had neither opportunity nor cause to amend them? The same simple 102 reference that would have been a mere speed bump in prosecution becomes a roadblock in litigation.

Tell you what, I don’t mind going back to a registration system, as long as we also go back to omnibus claiming. When the patent gets to court, the court construes the claim to cover whatever the invention is that is patentable over all the prior art of record, the patentee gets his due, and everybody’s happy.

As I mentioned, you did not need to look far for the source of that whiff.

My comments did not touch upon any of the other government functions that you so casually list, so your inclusion of them is a non-sequitur. Likewise, your ad hominim of socialist programs serves nothing to any attempts to advance the discussionon the merits. There simply is no need for you to be “moosebimbo’ing”.

If you actually wish to stay on point, then you need to consider the question at hand – does the Office work merit the presumption of validity to a Clear and Convincing level of administrative expertise or not. If the work of the Office does not merit the expected level, then the cost to value ratio clearly calls for the elimination of that cost. Notwithstanding the incorrect twist that IANAE tries to portray, it is not a question of perfection, but rather, it is an answer that the very limited benefit simply is not worth the cost in dollars and time for the minimal return on that investment.

The point too is that the arguments that IANAE advances for reducing the presumption in litigation to a mere preponderance actually reinforces my arguments to abolish the examination system. The more he argues for that point, the stronger my position is made. I realize that this must gall him tremendously, but there is no denying the outcome.

NAL: “Anything worth fighting over will be examined anew and in a rigor that the Office cannot match. All else is a waste of Office and Applicant resources, because the Office work product is unimportant (at a cost/benefit ratio). The only time it becomes important is at the litigation phase, and we have already covered that case in which the Office work simply has no deference.”

Anything short of perfection is worthless?

If you’re going to have that attitude, I can see why you’d rather not have any examination at all. I also predict you’ll die sad and alone, but that’s another show.

A Stale Light It is an easy choice to eliminate the cost to the applicants, to eliminate the limbo of waiting for examination to conclude.

Anything worth fighting over will be examined anew and in a rigor that the Office cannot match

Obviously we all know that the government is so inefficient it just drags everything down. Like drivers licenses, food safety requirements, and building codes, the only point seems to be to slow down the economy so the leftists have more time to enact their socialist programs and destroy the greatness that the founding fathers gifted to us, also, which is the free market and our value system.

“Which would be futile anyway, because a litigator can always find something new to argue. I’m perfectly happy leaving that level of analysis to the few patents that are important enough to litigate, and that doesn’t make PTO examination any less worthwhile.“

On the contrary, it very much means that the PTO examination is less worthwhile. It is an easy choice to eliminate the cost to the applicants, to eliminate the limbo of waiting for examination to conclude.

Anything worth fighting over will be examined anew and in a rigor that the Office cannot match. All else is a waste of Office and Applicant resources, because the Office work product is unimportant (at a cost/benefit ratio). The only time it becomes important is at the litigation phase, and we have already covered that case in which the Office work simply has no deference.

This is not a difficult point to comprehend – unless for some reason it is in your best interest to not comprehend it.

NAL: “The point here is that the Office fails to bring the most prominent prior art. The Office, in its limited efforts brings some art, but in litigation, where the matter matters most, art not before the Office, not previously considered (in a meaningful manner – not in a “it’s on a list that an examiner spent one minute reviewing” type of consideration) is produced.”

Your point, if I understand it correctly, is that litigators would rather rely on art that the examiner has not considered. I suspect that would be the case no matter how thorough the PTO examination might be, and it shows a certain degree of respect (and inherently, deference) for the job the PTO has done. PTO-cited art is trivial to find, but new art is very expensive to search and study in detail (though some will always be found, and ultimately an argument will always be made). Why don’t they use the same art the examiner has used, that is lying right there in front of them? Because the patent is very likely valid over that art. Doesn’t sound like a problem with the examination system to me.

You know what would be a waste of money? Giving the PTO a litigation budget to examine each patent and dredge up all the art a litigator might find, and give a well-reasoned rejection over each reference. Which would be futile anyway, because a litigator can always find something new to argue. I’m perfectly happy leaving that level of analysis to the few patents that are important enough to litigate, and that doesn’t make PTO examination any less worthwhile.

“Now, what’s the procedure for amending the claims during the infringement suit as new prior art is raised? Because that’s the real value of the examination process – you get to tailor your claims around the most prominent prior art, so that even if the court examines the claims de novo (which we all know it doesn’t do), you’ve already addressed whatever problems that art might have caused you”

The point here is that the Office fails to bring the most prominent prior art. The Office, in its limited efforts brings some art, but in litigation, where the matter matters most, art not before the Office, not previously considered (in a meaningful manner – not in a “it’s on a list that an examiner spent one minute reviewing” type of consideration) is produced.

It is insulting for you to now take the position that claims are not examined de novo in court – yet this type of cheap manipulation is common in your replies.

Your question of amendment procedure is factitious. As I have indicated, the level of cost is simply not worth that first pass in the Office to gain your so-called “real value”. There is no deference given to that “real value” – especially given your pushing for a preponderance standard in a de novo style court examination.

Arguing out of both sides of your mouth does raise a flag as to what your motives are.

The current examination is a bad deal that should be put to an end. Either afford the agency an expert status and treat its work product accordingly (which we see is not deserved), or abolish the agency, whose work product does not reach its intended expert status.

It’s a simple choice and there is no need to make the choice more complicated.

For those exceedingly small percentage who want the level of search and examination (which, as is appearant, is done de novo at court anyway), let the court handle it in the first place

Sounds like a plan. Now, what’s the procedure for amending the claims during the infringement suit as new prior art is raised? Because that’s the real value of the examination process – you get to tailor your claims around the most prominent prior art, so that even if the court examines the claims de novo (which we all know it doesn’t do), you’ve already addressed whatever problems that art might have caused you. In return, the public gets narrower claims, which they’re less likely to infringe – and notably, less likely to infringe while permissibly practicing the prior art.

You seem to have a substantial tie in to the status quo that is inexplicable.

I don’t care about the status quo (C&C is the status quo, for example). I want a properly functioning patent system where innovation is promoted, claiming the prior art is discouraged, and patents are issued quickly enough to get no PTA but still with some reasonable confidence level in their validity. That’s only inexplicable if you believe that I’m anti-patent.

“Balancing evidence in that way very rarely occurs in prosecution. It’s much more of a litigation thing”

All the more reason to simply disband the examination corp.

The more you argue your point IANAE, the more you argue mine (Unless of course, you are tryign to take a cheap shot at me).

The current methods of examination in the Office simply are not worth the costs in effort, time, and expenses. For those exceedingly small percentage who want the level of search and examination (which, as is appearant, is done de novo at court anyway), let the court handle it in the first place since no deference should be afforded per the vast number of Amici Curiae.

I just don’t understand the vehemence you have against a registration system, when your arguments here on the Clear and Convincing standard (and other places on the lack of deference due to the examination by the Office) so clearly point out the deficiences that can be wiped out in such a large percentage of cases by eliminating the examination process altogether. You seem to have a substantial tie in to the status quo that is inexplicable.

I think my answer would be along the same lines. Even when the patentee files the suit, he probably isn’t aware of the defendant’s best evidence, and he might not even want or expect his suit to reach a final decision on the merits.

Either it will shift the price point of settlement a little, or both parties will go to court and do their best, same as always.

For me, an important issue in briefing is the unraveling of how we arrived at the present state of affairs.

AIPLA takes a stab at this, but the result of their investigation seems to be that Justice Story just made up the BRD standard from whole cloth.

In a situation like this, where the whole point of this case is what the standard SHOULD be, for what purposes, and when, I think that the original decision on the standard should carry as much weight as all the ex post facto rationalizations thereof, combined. After all, that original decision framed the limits of the ensuing debate.

At least the AIPLA brief presents some historical facts, even if those facts do not logically support their position.

Well ping, I came to the AIPLA brief after reading Duffy and Moy. Their stuff does seem to me to be helpful to the court, friendly you might say. So, I was expecting something similar from the AIPLA Amicus Brief, like, unassailable arguments. But I found only what AINAE summarises above, namely, writing backwards from the conclusion to the title page. It left me unsatisfied. Yes, I did not like it.

Sorry you found my contribution over-long, a ramble and incoherent. You got the gist though, and I am heartened that another reader found it useful enough to quote, at length.

Where’s Ned Heller today, I wonder. He found the AIPLA logic unassailable. I suppose his membership dues helped to pay for the Brief.

I find in it no response to the point made by other Amici, that the asymmetry of “clear and convincing” (for one side but only “preponderance” for the other) cannot withstand a moment’s reflection.

Perhaps that’s why most briefs focus more on transmission than on reflection. They begin by deciding that a stronger patent is always better than a weaker patent, and keep writing till they get to the title page.

In these times of 50% + of patents issuing to foreigners, one would have thought the AIPLA might be more in tune with the times, recognising that the PTO has Ordinary Joe AIPLA member, bothered about wrongly issuing patents, as its customer just as much as any particular petitioner for one of its issued patents.

You’re talking about an association of lawyers here. Infringers only have lawyers when they get sued, but patentees have lawyers all the time. Not to mention that they all do better when there are more patents out there. Whose side do you expect most lawyers to be on?

That is why the EPO jurisprudence in opposition cases requires he who invokes “prior use” to prove it “up to the hilt”

I would hope most judges (and juries, in jurisdictions silly enough to have them in civil trials) would be inherently skeptical of uncorroborated testimony regardless of the standard of proof. Surely, “I didn’t do it” doesn’t even work in criminal cases where a reasonable doubt is enough. Add that to the various rules of admissibility and such, and it should be very hard to simply give one’s word that the patent was anticipated and get any mileage out of it.

The real silliness of the heightened standard comes through in the recent “tapered dosage” case where infringement doesn’t anticipate, and the slightly less recent “confidence level” case where the court decided that every percentage figure in every piece of evidence has to be within certain numerical bounds.

he will get his patent faster and cheaper if the PTO is freed of the burden of so carefully crafting the bargain that only those claims that are clearly and convincingly not invalid are allowed to get through to issue.

Balancing evidence in that way very rarely occurs in prosecution. It’s much more of a litigation thing. In court, you will have two experts disagreeing on what the prior art teaches or what can be combined, and the result might well hinge on their testimony. The reason they’re “experts” is that they’re explaining things ordinary people generally don’t understand. Now, how much more convincing can one expert really be than another when explaining to twelve people off the street something they can’t possibly understand?

“As a Japanese official studying the United
States patent system observed at the turn of the
20th Century, “[w]e asked ourselves ‘What is it that
makes the United States such a great nation?’ and
we investigated and found that it was patents….”

And weza all know that Maxi tries to denigrate the US patent at every chance and tries to weaken it cause it be a competitor to his interests.

Fascinating. Ned finds the AIPLA Brief “utterly convincing” while I find it embarrassing. I am surprised to see Don Ware’s name at the foot of it. I am surprised at AIPLA, for paying for this line of argument. I find in it no response to the point made by other Amici, that the asymmetry of “clear and convincing” (for one side but only “preponderance” for the other) cannot withstand a moment’s reflection. When I have to read in AIPLA, over and over again, about the “carefully crafted bargain” struck between the USPTO and the Affidavit-wielding Applicant, with no recourse to a wrongly issued patent until one gets over the C+C standard, I laugh out loud. If Affidavit evidence calling into question the validity of an issued claim must be clear and convincing then why not also those Affidavits that bring the application to issue? In these times of 50% + of patents issuing to foreigners, one would have thought the AIPLA might be more in tune with the times, recognising that the PTO has Ordinary Joe AIPLA member, bothered about wrongly issuing patents, as its customer just as much as any particular petitioner for one of its issued patents.

Of course there is a problem with the probative value of oral testimony, of prior use, sale or whatever. That is why the EPO jurisprudence in opposition cases requires he who invokes “prior use” to prove it “up to the hilt” But that’s not the same thing as “C+C everywhere”.

AIPLA tells us that the “strong” US patent system required, even a hundred years ago, clear and convincing evidence to reveal the lack of validity of a duly issued claim. We are invited to conclude that C+C must stay because, a hundred years ago, Japan identifies “patents” as that which “makes the United States such a great nation”. Ned, this AIPLA brief brings no credit on AIPLA its members or the authors of this Brief.

The irony is that Little David ought to be entitled to “his day in court” but he can’t get there, suing an infringer, till he gets his patent and he will get his patent faster and cheaper if the PTO is freed of the burden of so carefully crafting the bargain that only those claims that are clearly and convincingly not invalid are allowed to get through to issue. What about late-emerging secondary indicators of non-obviousness, for f’s sake. Small inventors rely on these secondary indicators more than the big beasts of the patent system.

The AIPLA brief presents a plausible reason why, apart from any APA issue, the standard should be C&C across the board:

“The heightened standard of proof protects inventors from the inevitable vulnerability brought about by the public disclosure of their inventions required in exchange for the patent grant.”

“With his patent disclosure, the inventor enables others with illicit motives to claim that they invented first, requiring the inventor to prove a negative, i.e., that others did not make the invention before he did.”

Not at all “utterly convincing”–for instance, if defendant has not met even a POE standard, the inventor is “required” to prove nothing–and somewhat clumsy in its wording, but a nice try at what I see as a critical point in this whole issue.

I must say that the AIPLA brief is the best I’ve read so far, and utterly convincing. It is hard to reconcile, on its face, that Carl Moy and the AIPLA are talking about the same history. Moy says the statute on presumption was only to clairify that the burden was on the party asserting invalidity. The AIPLA quotes Story, Cardozo and Rich quite to the contrary, particularly with respect to evidence of the kind that Microsoft is advancing in this case, evidence of prior invention and prior use.

I literally busted out cntrl-f just to find the most recent post once today, even with the new threading. That is ridiculous. Either way, the new threading is better than the old threading, except my cool picture does not display.

Don’t get me wrong, the threaded view is cool in some respects, but it definitely needs an off button. Or else it needs something that highlights all posts in different shades to indicate how long ago they were posted. Or something ingeniuous like that. Oh my, did I just accidentally an invention?

The potential impact of a lowered standard of proof is huge, IMHO. There is LOTS of room between C&C and POE, and there are lots of people occupying that space.

All the more reason not to dismiss the issue with empty platitudes and slogans like “don’t weaken the patent system” and to have a serious discussion of what the law properly is and what it ought to be. We want the correct test to apply to those “lots of people” and their accused infringers.

I don’t actually think the standard of proof will make a huge difference in filings (and it would be in the direction opposite to what you suggest), because people are usually pretty convinced of the patentability of their inventions when they file, and it won’t hurt their chances of getting a patent issued.

All it will really change is whether juries decide based on who seemed more convincing or whether they hold out for some unquantifiably higher degree of persuasiveness from the challenger, in cases where the facts are in dispute. How well do lay people even understand what “more convinced” means? I wouldn’t be surprised if a lot of jurors apply “beyond a reasonable doubt” to any case with a higher standard of proof, because that’s the standard they see on TV. I still remember jurors after the OJ trial talking about “beyond a shadow of a doubt”, which is higher than any legal standard we have.

It is interesting that although the SAP brief purports to “support” Microsoft, it takes a position contrary to Microsoft’s on the applicability of the APA to infringement suits.

It’s also interesting that everyone calls themselves a “friend of the court”, when all they ever do is ask the court for favors. Next thing you know, they’ll be crashing on the court’s couch while they’re in town. With fronds like these, who needs anemones?

Dennis: “In many ways, this case would only shift marginal cases — such as when an accused infringer is able to prove that a patent is probably invalid, but cannot provide clear and convincing evidence of that fact.”

By using the word “only”, Dennis downplays the potential significance of the effect.

The small question is: “How many of the filed cases are marginal?”

The bigger question is: “How many of the currently unfiled cases are marginal, and would therefore be converted to filed cases?”

The potential impact of a lowered standard of proof is huge, IMHO. There is LOTS of room between C&C and POE, and there are lots of people occupying that space.

I think that the SAP brief gets to the meat of the issues. I particularly appreciated their statement that: “The circuit’s “clear and convincing evidence” standard is typically read as a jury charge, with the jury being asked to
decide legal questions concerning patent invalidity.
That practice invites the conflation of legal and factual
issues…”

It is interesting that although the SAP brief purports to “support” Microsoft, it takes a position contrary to Microsoft’s on the applicability of the APA to infringement suits.

I know you don’t, and I’m sure you have way better things to do, but even the slightest well-chosen action would probably make a world of difference to anyone who casually stumbles upon your blog and reads the comments, as well as to those of us who are here for serious discussion.

He only bothers to do it because it’s tolerated.

That comment feed is a huge help, thank you so much. Sometimes, “Recent Comments” doesn’t go back far enough.

Big D – one thing that might help – can you cabin the windows such that the column Search & Share and the column Author do not run the full vertical length of the web page? You might get comments in a flatter style and eliminate some of the long scroll down that plagued your previous setup.

Is there any way to give us the option of viewing the posts the old way (not as nested replies), so that we can see at a glance what’s been posted since our last visit?

Also, I know this is asking a lot, and it’s weird coming from me, but I’d love to see a little more active moderation of the posts here. Something more permissive than Gene Quinn, but just enough to encourage a slightly higher tone of discourse.

The board is becoming unusable Dennis–it’s a chore to follow threads, and when posters intend to post to a thread but accidentally do not, they have to make a second post to map to the first.

The old format may have followed a seemingly overly-doofus linear architecture, but maybe it more closely mirrored the mental architecture of us posters.

PLEEEEAAAASSSE revive the old format.

I’m wondering what advantages have been realized on your end as a result of the format change. Whatever they are, be aware that 2 things have already happened to the board: 1) existing posters have declined to make posts they formerly would have made (a net detriment, I believe), and 2) the depth of discussion has waned. IMHO

Iza gotta say – followin any sense of comments nested with commonets is damm near impossible.

On the observation (not mine) that the CAFC is offering the C&C Plus position, I be only seein good Ol maxie throw out a comment so far. C’mon chaps – ya gonna let a Blimey be the only one to discuss the obvious power play?

Afar means the patent is stronger wrt to the issue (e.g., prior art) that caused the reexam. If the litigation involves a new issue however, then the reexam won’t be as relevant. On the other hand, you won’t find many patents invalidated by the CAFC based on the same issue the PTO validated in reexam.

Any amendment to the claims is a significant gain for both the patentee and the public. Even an argument without amendment is at worst neutral and at best a gain all around. If you think that gain is nevertheless not worth the cost, we can look at the cost, but so far the PTO runs at a profit and their fees are dwarfed by ours.

If the time “cost” is the real problem, I’d say a more appropriate solution would be to increase the PTO’s capacity. Write your Congressman.

FromAfar If these parties can meddle with the standard, they are free to continuously seek to invalidate a perfectly good patent with endless court challenges under a reduced standard, which has a more than 50% probability of eventually succeeding.

The patent will be “stronger” only if the re-exam is properly performed.

Yes, but there’s always that chance.

Remember, we’re comparing re-exam to litigation, where if the patent survives it will be stronger than ever and you’ll be found liable for infringement damages. Clearly, re-exam is the scarier option, for some reason.

FromAFart: The fact is, parties don’t want re-exam because if the patent survives it will be stronger than ever.

The patent will be “stronger” only if the re-exam is properly performed. Re-examined patents are, in fact, found invalid all the time. I believe on more than one occasion the Federal Circuit has found patents invalid that were re-examined TWICE.

Thanks Joe – I used to write about the amicus curiae briefs, but was always unsure about my latin usage. I’m now using “friends of the court” to describe these briefs, but its unclear whether this is a one-way friendship…
DC

I’m disappointed that the Supreme Court granted cert in the Microsoft v. i4ipatent litigation. Unfortunately, I wonder whether the decision to do so derives at all from the fact that Chief Justice Roberts happens to be a Microsoft shareholder. One wonders whether recusal will be forthcoming, but either way the damage is probably done.

IBP, I agree with your analysis of Cisco’s brief, but I also find it disengenous. For example, the brief states that (one of) Congress’ purpose of enacting reexaminations was to reduce the burden of litigation: but it cites a provision allowing ONLY a patent owner to request a stay.

In another section, it relies on In re Etter for its holding that a preponderence of evidence standard applies in the USPTO. But it fails to mention that the reason it did so was because it therein held that the “presumption of validity” does not apply the re-examinations – over the vigorous dissent of Helen Nies, who argued that the statute does not expressly limit limit the operation of the presumption of validity to the courts, but only to patents.

It argues the unfairness that a prior adverse court decision could prevent a company from further inter partes challenges. Haven’t they heard of the seventh amendment? Haven’t they heard of principles res judicata?

Finally, the brief told ignores that the patent office operates under “broadest reasonable interpretation.” They want the Supreme Court to somehow believe that the proceedings of the patent office and the proceedings of the courts are equivalent. But they are not – and this is the primary reason why.

If you’re using your patent to create jobs, eBay will happily give you all the injunction you want.

If you really invented something non-obvious, KSR and i4i will leave your patent unscathed and stronger for the experience.

First-action abandonments are up, and filings are down? It’s the economy, stipud.

One thing that definitely won’t help individual inventors is a sliding scale standard of proof. It will make trials a huge mess, where every single point has to be debated and meta-debated. Make it a preponderance standard with the burden on the challenger, and let the properly non-obvious patents take one step forward.

Inventors are fed up. Their first action abandonments are considerably up and filings noticeably down. If we can’t protect our discoveries as trade secrets, we’ll leave them in our notebooks. Say goodbye to 90+ % share of new jobs they would have created. Someone wake up those nodding SCOTUS judges. The patent system is supposed to encourage inventors, not discourage. Between SCOTUS, Congress and the PTO the only salute inventors are giving them is the one fingered variety.

Follow the money: Who is paying Prof. Duffy? SAP would find alien any standard other than “Preponderance + Deference to the PTO”.

Duffy cites Tokai for the proposition that the CAFC is calling for a standard of “C+C with deference to the PTO on top of that”. I think it is a deliberate squeeze on SCOTUS, put together by the CAFC and the Professor, to lead SCOTUS to a commonsense standard, of “Preponderance, but with Deference to the PTO”.

This is the standard used everywhere else in the world. FromAfar (ironic name, that) Is every other jurisdiction out of step with the real world?

“IBM has an extremely strong and lucrative patent monetization program;”

And there you have it. Serious patentees who invest heavily in R&D for enabling technology, who actually make and sell manufactured things, and who are serious about the business of putting their patent portfolio to proper use recognize that maintaining the C&C standard is important.

That they have not been sued is most likely also testimony to the effectiveness of their approach. In other words, they are not sued because of the sheer gravitas of their portfolio, the way in which they enforce it, and the concomitant threat that they pose from the offensive side of the fence. These factors pose a formidalbe deterrent to potential plaintiffs.

Others who are less serious about patents, don’t really understand them and what they are used for (e.g. Mooney – patent is “probably” invalid), or see them as some kind of annyoance, of course, advocate for a weaker system by advocating lowering the standards.

I submit that the folly of all of this is the failure to recognize that there will ALWAYS be art that the PTO did not consider. In fact, it can be argued that the art that the PTO considers will always represent a very small subset of the art that could have been considered.

This is why the PTO should strive to retain highly skilled Examiners, continue to improve their searching capability, and maintain the objective of issuing patents over the best available art with the correct presumption intact.

If there is better art, which there may very well be, let the parties bring it up over the bargaining table or in court where it properly belongs.

Incidentally, since there will always be no shortage of art not considered, and in view of the re-exam option the standard should remain high. If parties don’t like C&C they can take their chances with re-exam. I can’t even imagine the line of argumentation that supports a lowered standard in view of the availability of re-exam. It should be exactly the opposite.

The fact is, parties don’t want re-exam because if the patent survives it will be stronger than ever. If these parties can meddle with the standard, they are free to continuously seek to invalidate a perfectly good patent with endless court challenges under a reduced standard, which has a more than 50% probability of eventually succeeding.

Having two different standards would require the litigants to debate whether or not the issue in question was in fact addressed by the examiner. Even when the answer turns out to be yes, the jury still hears a description of how little time the examiner actually spends looking through many of the references that are before her. As a result, the jury may give the patent office less deference than they otherwise would have.

Innovatively washed out tech companies such as cisco, google, microsoft, etc. are trying their best to weaken the patent rights for years (but only for the patents not owned by them). Let’s shut down the patent office or change it to patent registration system. Let parties litigate to decide whether the IP is valid.

To expand: It’s like a category mistake to talk about the probability of whether the patent is valid. It’s almost like a court saying, “We have to determine the probability that our ruling is going to be invalidity. …. we hereby determine that the probabiilty that we will rule ‘invalid’ is 53%. Therefore, the patent is invalid, and we so rule.”

“In many ways, this case would only shift marginal cases — such as when an accused infringer is able to prove that a patent is probably invalid, but cannot provide clear and convincing evidence of that fact.”

IT seems odd to call the status of being invalid (or not) a “fact.” Is it really?

Wording it this way implies there is something out there in the universe that determines the status of the patent as objectively invlid, or not. And that the court is just making its best guess to determine this fact. So if the court can’t be sure but says it’s “probably” invalid, and thus rules it invalid, maybe they are wrong.

This seems confused to me. The status of the patent as valid or not IS what the court determines. The status flows FROM the court’s decision. But the court pretends like it’s just doing its humble best to find some objective fact out there–as it does, in normal cases where, say, it’s trying to determine whether A did kill B. In that kind of case, it makes sense for the court to say it’s probable that A did kill B. That makes logical sense. BUt it makes no sense to even talk about the probability of the patent being invalid.

For juries, the distinction is not very clear between the two burdens. Forget the lay jury, if I am sitting in the jury, even I can’t make a determination properly (i.e., whether I am 51% convinced or 70% convinced)- and I am a lawyer. Microsoft is simply throwing some dust to get their case back to trial court.

A defendant might have a chance of invalidating a claim during a pending inter partes re-exam using the preponderance standard. But if they’re already involved in a lawsuit, and the court decides to deny the defendant’s stay motion and charge forward to judgment without waiting for the results of the re-exam, then the defendant may fail to prove their case using the more difficult standard and thereby be denied access to the PTO’s lower standard.

Essentially, if the evidence falls in between the preponderance and C&C standards, then the outcome of the case would be wholly dependent on whether the court decided to wait for the re-exam or not.

Cisco et al. argue that the only way to prevent this outcome is for the standard to be the same in both the PTO re-exam proceedings and in litigation, and they argue that the correct standard is the preponderance standard used by the PTO during initial examination.

We are looking for inventors, academic institutions, tech transfer people, etc. to sign on to this letter. Time is of the essence. Please reply to Support-i4i@PIAUSA.org and we will add your name to the list. We need your request in email form, not a telephone call.

Please include the following information:

– Name of Company / Person

– Contact person and coordinates

– City/Town and Site of headquarters

– Confirmation that they agree to be a signatory to the attached letter which will be sent to the Attorney General

I am asking once again that all inventors, small business, academics and anyone else who values our patent system to sign i4i’s letter. If the burden of proof is lowered most patents will be worthless. Large transnational corporations are incredibly shortsighted and totally devoid of ethics. Their attempt to change the burden of proof will be disastrous for both inventors and competitiveness. This change would allow foreign interests, often backed by their governments (China, India, etc.) to easily invalidate patents.

**** Please include the following information:
– Name of Company / Person
– Contact person and coordinates
– City/Town and Site of headquarters
– Confirmation that they agree to be a signatory to the attached letter which will be sent to the Attorney General A diverse group of 171 companieslink to docs.piausa.org

“And 6 – ya bring the chuckles yet again – Google be sayin that ya aint doin your job and you be agreein with that. The funny thin is ya don’t even realize that ya be insultein yourself.”

Um, insulting myself and insulting those inhabiting the same building as I do sometimes are two different things tard.

But, regardless of that, it is plainly not an insult to examiners to say that the judicial/management/half-hearted legislation created monstrosity of a patent system we have today makes it so that most examiners are not technically doing a good job and are encouraged by the system to issue patents without a complete analysis. That is not an insult to the examiners themselves what so ever. The machine, which is under discussion is wholly outside their control. The only people to be insulted by pointing out the flaws in the machine are those involved in its creation, maintanence and updating. Aka the courts, management, and the congress.

“The brief by Google, et al., takes this a step further than the normal “lack of time” and “incompetence” statements – arguing that the current law and practice “tilt the scales heavily in favor of granting patent applications based on incomplete analyses.””